Ex Parte Otter

Board of Patent Appeals and Interferences

May 14, 2004

09923998 (B.P.A.I. May. 14, 2004)

The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of the
Board.

Paper No. 19

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte JAMES WILLIAM OTTER
__________

Appeal No. 2004-1125
Application No. 09/923,998
___________

ON BRIEF
___________

Before KIMLIN, PAK, and DELMENDO, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on an appeal under 35 U.S.C. § 134
(2003) from the examiner’s final rejection of claims 1 through
3, 5 through 8, and 11 through 30 (final Office action mailed
May 21, 2003, paper 9) in the above-identified application.
Claim 4, the only other pending claim, stands withdrawn from
further consideration pursuant to 37 CFR § 1.142(b)
(2003)(effective Dec. 22, 1959).
Appeal No. 2004-1125
Application No. 09/923,998

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The subject matter on appeal relates to a heat exchanger
component (claims 1-3, 5-8, 11, 12, 20-23, and 28), a
refrigerant cycle (claims 13-17, 24-27, and 29), and a method
for lowering the surface energy of a heat exchanger (claims 18,
19, and 30). According to the appellants, heat transfer in an
air conditioner is improved by applying a thin coating of a
“lower surface energy material” on the inner surface of the heat
exchanger of the air conditioner to prevent the wetting of
lubricating oil on the oxide coated inner surface.
(Specification, paragraphs 1-10.) Further details of this
appealed subject matter are recited in representative claims 1,
2, 5, 6, 8, 12, 13, 19, 20, 21, 24, and 28 reproduced below:
1. A heat exchanger component comprising:
a plurality of flow passages; and
a low surface energy coating on a surface of said
plurality of flow passages, said low surface energy
coating reducing a wettability of oil on said
plurality of flow passages.

2. The heat exchanger component as recited in
claim 1 wherein said low surface energy coating is
formed from a solution including a low surface energy
substance and a solvent.

5. The heat exchanger component as recited in
claim 2 wherein said low surface energy substance is a
silane.

6. The heat exchanger component as recited in
claim 5 wherein said solution contains said low
surface energy silane in an amount of 1-2% by weight.

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Application No. 09/923,998

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8. The heat exchanger component as recited in
claim 1 wherein said low surface energy coating is
monomolecular.

12. The heat exchanger component as recited in
claim 1 wherein said plurality of flow passages
include a plurality of interstices.

13. An [sic] refrigerant cycle comprising:
a compression device to compress a refrigerant to
a high pressure employing a lubricating oil;
a heat rejecting heat exchanger for cooling said
refrigerant including a plurality of condensing flow
passages with a monomolecular layer of a low surface
energy coating on a condensing surface to prevent said
lubricating oil from wetting said condensing surface
of said heat rejecting heat exchanger;
an expansion device for reducing said refrigerant
to a low pressure; and
a heat accepting heat exchanger for evaporating
said refrigerant including a plurality of evaporating
flow passages with a monomolecular layer of a low
surface energy coating on an evaporating surface of
said heat accepting heat exchanger to reduce a
wettability of oil on prevent said lubricating oil
from wetting said evaporating surface of said heat
rejecting accepting heat exchanger.

18. A method for lowering the surface energy of
a heat exchanger comprising the steps of coating a
surface of a plurality of flow passages of said heat
exchanger with a low surface energy substance in
solution and reducing a wettability of oil on said
plurality of flow passages.

19. The method as recited in claim 18 wherein
the step of coating said plurality of flow passages
includes flowing said solution through said plurality
of flow passages of said heat exchanger, draining said
solution from said plurality of flow passages of said
heat exchanger, and drying said plurality of flow
passage of said heat exchanger.

20. The heat exchanger component as recited in
claim 2 wherein said low surface energy substance is
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Application No. 09/923,998

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selected from the group consisting of
polyetheretherketone and polysulfone.

21. The heat exchanger component as recited in
claim 1 wherein a first fluid flows through said
plurality of flow passages and a second fluid flows
around said plurality of flow passages, and said first
fluid and said second fluid exchange heat.

24. The refrigerant cycle as recited in claim 13
wherein said low surface energy substance is selected
from the group consisting of polyetheretherketone and
polysulfone.

28. The heat exchanger component as recited in
claim 1 wherein said oil forms droplets on said low
surface energy coating.

In addition to the appellant’s admitted prior art, the
examiner relies on the following prior art references as
evidence of unpatentability:
Erwin 3,925,149 Dec. 09, 1975

Lowenstein et al. 5,992,508 Nov. 30, 1999
(Lowenstein)

Ogawa et al. EP 0 864 622 A2 Sep. 16, 1998
(Ogawa)(published
EP application)

The appealed claims stand rejected as follows:
I. claims 1 through 3, 7, 8, 11, 18, 28, and 30 under 35
U.S.C. § 102(b) as anticipated by Erwin (examiner’s
answer mailed Jan. 13, 2004, paper 15, page 3; final
Office action, pages 2-3);
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Application No. 09/923,998

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II. claim 19 under 35 U.S.C. § 103(a) as unpatentable over
Erwin (answer, page 3; final Office action, page 6);
III. claim 20 under 35 U.S.C. § 103(a) as unpatentable over
Erwin in view of Lowenstein (answer, page 3; final
Office action, pages 3-4); and
IV. claims 1, 5, 6, 12 through 17, 21 through 27, and 29
under 35 U.S.C. § 103(a) as unpatentable over the
appellant’s admitted prior art in view of Ogawa
(answer, page 3; final Office action, pages 4-6).
We affirm rejection I but reverse rejections II through IV.1

I. Claims 1-3, 7, 8, 11, 18, 28, & 30:
35 U.S.C. § 102(b) over Erwin

Prior to addressing the merits of the examiner’s rejection,
we determine the scope and meaning of certain terms that appear
in appealed claim 1. Gechter v. Davidson, 116 F.3d 1454, 1457,
1460 n.3, 43 USPQ2d 1030, 1032, 1035 n.3 (Fed. Cir. 1997); In re
Paulsen, 30 F.3d 1475, 1479, 31 USPQ2d 1671, 1674 (Fed. Cir.
1994).

1 With respect to rejection I, the appellant groups the
rejected claims as follows: (1) claims 1-3, 7, 11, and 18; (2)
claim 8; and (3) claims 28 and 30. (Appeal brief filed Oct. 21,
2003, paper 14, pp. 3-5.) We therefore select claims 1, 8, and
28 from each of the appellant’s claim groupings and decide this
appeal as to the examiner’s ground of rejection on the basis of
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Application No. 09/923,998

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The present specification explains (paragraphs 2, 3, and
6):
During operation of an air conditioner or other
refrigerant cycle, lubricating oil in the compressor
may leak and mix with the refrigerant that circulates
through the air conditioning system. As the
refrigerant flows through the tubing of the
evaporating and condensing heat exchangers, the
lubricating oil coats and wets the inner surface of
the heat exchangers.
Often, the inner surface of the tubing of a heat
exchanger is provided with interstices to increase the
effective area for heat transfer. As the refrigerant
flows through the evaporator, the lubricating oil
mixed with the refrigerant is easily entrapped in the
interstices of the tubing, smoothing the inner surface
and reducing the effective area for heat transfer...
A thin coating of a lower surface energy material
in solution is applied on the inner surface of a
condenser or evaporator...

From this enlightenment, we determine that the claim
language “low surface energy” refers to a surface energy that is
lower than the surface energy of an otherwise uncoated inner
surface of the heat exchanger in which air conditioning
refrigerant is present. It follows then that the phrase
“reducing a wettability of oil” refers to any reduction in
wettability of the oil relative to an otherwise uncoated inner
surface of the heat exchanger in which air conditioning
refrigerant is present.

these claims only. See 37 CFR § 1.192(c)(7)(2003)(effective
Apr. 21, 1995).
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Application No. 09/923,998

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The appellant does not dispute the examiner’s determination
(final Office action, page 3) that Erwin describes a heat
exchanger component comprising a plurality of passages, the
surfaces of which are coated with a fluorocarbon. Rather, it is
the appellant’s principal argument that the “claimed coating
reduces oil wettability” whereas “Erwin teaches a coating that
increases oil wettability.” (Appeal brief, pages 4-5.)
The appellant’s position lacks merit.
Erwin teaches a heat exchanger for the evaporation of
aqueous solutions containing dispersed or dissolved solids in
which a heated immiscible liquid such as oil is used as a heat
transfer liquid that makes liquid/liquid contact with either the
aqueous solution or a highly dispersed mixture of the aqueous
solution in oil in a combination heating and mixing chamber
whereby a portion of the solution droplets are vaporized.
(Column 1, lines 14-27.) As pointed out by the examiner, Erwin
teaches coating the surfaces exposed to the aqueous solution
with a fluorocarbon, which the appellant describes as a
preferred material for the “low surface energy coating.”
(Erwin’s column 1, line 14 to column 2, line 18; present
specification, paragraph 22 and appealed claim 7.)
Because the coatings described in the appellant’s
specification and Erwin are identical, the prior art coating
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must inherently or necessarily possess the same characteristics
recited in appealed claim 1. In re Schreiber, 128 F.3d 1473,
1478, 44 USPQ2d 1429, 1432 (Fed. Cir. 1997); In re Spada, 911
F.2d 705, 708, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
We are not persuaded by the appellant’s erroneous argument
that, unlike the recited coating, Erwin’s coating increases oil
wettability. Erwin actually teaches that the fluorocarbon is
“preferentially oil wettable” relative to the aqueous solution.
(Column 1, line 68 to column 2, line 5.) This is not
inconsistent with the characteristic or function of the coating
recited in appealed claim 1, which characteristic or function
does not involve the presence of an aqueous environment but an
air conditioning refrigerant instead.
We also reject the appellant’s untenable argument (reply
brief filed Mar. 31, 2004, paper 17, pages 1-2) that only
appealed dependent claim 7, and not independent claim 1,
specifies fluorocarbon as one of the recited low surface energy
coating substances. This argument appears to be based on a
complete misunderstanding of the relationship between an
independent claim and a dependent claim. Because a dependent
claim must further limit an independent claim,2 an independent

2 See 37 CFR § 1.75(c)(2003)(effective Oct. 1, 1982).
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claim will necessarily encompass the subject matter of a
dependent claim.
As to separately argued claim 8, the appellant argues that
Erwin does not disclose that the fluorocarbon coating is
“monomolecular.” (Appeal brief, page 5.) This argument is not
persuasive, because the appellant proffers no objective evidence
to establish that a “monomolecular” coating, as described in the
specification in paragraph 19, is any different in terms of
structure from Erwin’s coating having a thickness of 0.5 mil to
2 mils. In re Thorpe, 777 F.2d 695, 697, 227 USPQ 964, 966
(Fed. Cir. 1985); In re Best, 562 F.2d 1252, 1255, 195 USPQ 430,
433-34 (CCPA 1977).
As to separately argued claim 28, the appellant urges that
Erwin does not disclose oil droplets on the surfaces of the flow
passages. (Appeal brief, page 5.) The appealed claim, however,
is directed to a heat exchanger component that does not
positively recite oil as part of the heat exchanger component.
Because Erwin’s heat exchanger and the appellant’s heat
exchanger component are structurally identical, oil droplets
would necessarily form in Erwin’s heat exchanger when it is
subjected to the same conditions described in the present
specification.
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Application No. 09/923,998

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For these reasons, we uphold the examiner’s rejection on
this ground.

II. Claim 19: 35 U.S.C. § 103(a) over Erwin
Regarding claim 19, the examiner admits that the recited
coating steps are not disclosed in Erwin. (Final Office action,
page 6.) Nevertheless, the examiner held (id.):
It would have been obvious to a person of
ordinary skill in the art at the time the invention
was made to perform the coating process that includes
flowing the solution through the passages, draining
the solution, and drying the passages, since applicant
has not disclosed that performing such process solves
any stated problem or is for any particular purpose
and it appears that the passages in the heat exchanger
would perform equally well with a coating process that
includes heat bonding as described by Erwin.
Furthermore, the coating process involving the
flowing, draining, and drying is a well known process
in the art dealing with applying a thin layer of
coating inside a tube.

We cannot agree with the examiner on this issue. The
examiner does not point to any specific motivation, suggestion,
or teaching in the prior art that would have led one of ordinary
skill in the art to modify Erwin. In re Dembiczak, 175 F.3d
994, 999, 50 USPQ2d 1614, 1617 (Fed. Cir. 1999); In re Warner,
397 F.2d 1011, 1016, 154 USPQ 173, 177 (CCPA 1967).
For this reason, we cannot uphold this ground of rejection.

Appeal No. 2004-1125
Application No. 09/923,998

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III. Claim 20: 35 U.S.C. § 103(a) over
Erwin in View of Lowenstein

The examiner’s basic position is that Lowenstein teaches
polyetheretherketone as a coating on the surface of heat
exchangers and that its use in Erwin would have been obvious to
one of ordinary skill in the art. (Final Office action, page
4.)
We disagree. Nothing in Lowenstein suggests that
polyetheretherketone and fluorocarbon would be interchangeable
for the purpose described in Erwin.
Accordingly, we cannot affirm.

IV. Claims 1, 5, 6, 12-17, 21-27, & 29: 35 U.S.C. §
103(a) over the Admitted Prior Art in View of Ogawa

The examiner admits that the admitted prior art does not
disclose a heat exchanger component having the recited coating
but that Ogawa provides the motivation to apply a monomolecular
coating on the heat exchanger surfaces of the admitted prior art
“in order to provide a longer lasting device through the strong
adhesion to the substrate so that the cost of maintenance is
reduced.” (Final Office action, page 5.)
Again, we cannot agree with the examiner. Nothing in Ogawa
suggests the desirability of applying the here recited coating
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on the surfaces of a plurality of flow passages of a heat
exchanger.
For this reason, we cannot affirm this ground of rejection.

Summary
In summary, we affirm the examiner’s rejection under 35
U.S.C. § 102(b) of appealed claims 1 through 3, 7, 8, 11, 18,
28, and 30 as anticipated by Erwin. We reverse, however, the
rejections under 35 U.S.C. § 103(a) of: claim 19 as unpatentable
over Erwin; claim 20 as unpatentable over Erwin in view of
Lowenstein; and claims 1, 5, 6, 12 through 17, 21 through 27,
and 29 as unpatentable over the appellant’s admitted prior art
in view of Ogawa.
The decision of the examiner is therefore affirmed in part.

Appeal No. 2004-1125
Application No. 09/923,998

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No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED IN PART

Edward C. Kimlin )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
Chung K. Pak )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
)
Romulo H. Delmendo )
Administrative Patent Judge )

RHD/kis
Appeal No. 2004-1125
Application No. 09/923,998

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